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Omyacolor S.A. v. Recep Tanisman - Emko Emaye A.S. [2005] GENDND 1479 (3 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Omyacolor S.A. v. Recep Tanisman - Emko Emaye A.S.

Case No. D2005-0520

1. The Parties

The Complainant is Omyacolor S.A., Saint Germain la Ville, France, represented by Cabinet Breese-Derambure-Majerowicz, Paris, France.

The Respondent is Recep Tanisman - Emko Emaye A.S., Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <robercolor.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2005. On May 17, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On May 23, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2005.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on July 29, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

It is noted that Omyacolor holds the following trademark:

- French trademark ROBERCOLOR No. 1 430 314, filed on October 13, 1977, in class 16 (Appendix A, Enc. No. 11A to 11 Dbis);

- International trademark ROBECOLOR No. 435 294, registered on January 25, 1978, in class 16 (Appendix A, Enc. No. 12A to 12Dbis);

These trademarks represent only a part of the portfolio of ROBERCOLOR trademarks held by the Complainant in numerous countries.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The domain name <robercolor.com> identically reproduces the above-mentioned trademarks belonging to the Complainant.

Registering this domain name therefore created a likelihood of confusion on the part of the public as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website to which users of the disputed domain name are redirected.

The Respondent has no rights or legitimate interests in registering the domain name, nor in operating a website with this domain name

The owner of the domain name <robercolor.com> has no rights or legitimate interests in respect of the names ROBERCOLOR, neither trademark, nor company name.

In particular, the status of former distributor of the products manufactured by the Complainant confers no mandate, instruction nor authorization to register a domain name and does not confer upon the said distributor any right or legitimacy to register a domain name including the term ‘robercolor’ in its own right.

The Respondent has indisputably acted in bad faith both in registering the domain name and in using it

The Respondent is a former distributor of the Complainant’s products in Turkey, and is still a distributor of the mother company, F.I.L.A., of the Complainant.

The Respondent could not therefore have been unaware of the existence of the aforesaid trademarks belonging to the Complainant. It should also be made clear that the reputation of Complainant is based, in particular, on ROBERCOLOR writing chalk in France and abroad.

By registering the disputed domain name, the Respondent thus sought to profit from the renown enjoyed by the Complainant in the field of writing chalk.

Furthermore, registration of this domain name by a competing company has had the effect of depriving the Complainant of the ability to use their trademarks on the Internet.

The disputed domain name automatically redirects users to the Respondent’s website, which presents, in particular, the OMYACOLOR products.

It is the Respondent’s intention to disturb the business activities of the Complainant and to attract directly to its website the Complainant’s clients by creating confusion with Complainant’s trademark ROBERCOLOR.

This is clearly a demonstration of bad faith on the part of the Respondent.

In conclusion:

- The disputed domain name constitutes infringement by identical reproduction of the earlier trademarks listed above belonging to the Complainant;

- The Respondent has no rights of legitimate interests to register this domain name;

- The Respondent registered this domain name with the aim of both profitting from the Complainant’s renown in the field of writing chalk and damaging it by creating confusion for the Complainant’s clients with Omyacolor’s ROBERCOLOR products.

Remedies requested

The Complainant requests that the Panel issue a decision that the disputed domain name <robercolor.com> be transferred to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is <robercolor.com>.

The Complainant has the rights to several ROBERCOLOR trademarks, hereunder:

- French trademark ROBERCOLOR No. 1 430 314, filed on October 13, 1977, in class 16;

- International trademark ROBERCOLOR No. 435 294, registered on January 25, 1978, in class 16.

The suffix “.com” does not distinguish the domain name at issue from Complainant’s marks.

The Panel finds that the disputed domain name is identical to Complainant’s ROBERCOLOR marks.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s allegation that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue. Since Respondent is in default, these allegations have not been contested, and the Panel finds it unlikely that Respondent could be in a position to claim any rights in the domain name at issue.

The Panel has taken under consideration that Respondent was a distributor of Complainant when the disputed domain name was registered by Respondent. However, according to Complainant, the right to sell products and to use the trademark ROBERCOLOR, did not include the right to register the disputed domain name <robercolor.com>. This is not disputed by Respondent.

In the Panel’s opinion, a distributor may not register a domain name identical to the principal’s trademark, unless the principal has given his explicit prior consent. The Panel finds that no such consent was given by Complainant. Furthermore, Respondent has used the domain name to present products bearing the Respondent’s own trademarks. This fact distinguishes the case from the facts of the Oki Data case (Oki Data Americas, Inc.v. ASD, Inc., WIPO Case No. D2001-0903).

The Panel finds that the circumstances mentioned and evidenced by Complainant establish a prima facie showing that Respondent has no rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard to Respondent’s registration and use of the domain name in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name in bad faith.

Respondent has registered a domain name that is identical to the trademark of Complainant, which is of a distinctive and complex character. The Respondent also had a business relationship with Complainant prior to its registration of the contested domain name. The Panel thus finds that the ROBERCOLOR trademark was known to the Respondent when registering the domain name at issue.

As the Panel has concluded under paragraph B above, the Respondent does not have any legitimate rights or interests in using the domain name at issue.

It is also clear that Respondent, by registering the disputed domain name, has prevented Complainant from reflecting its ROBERCOLOR mark in the “.com” domain.

The Panel also find that Respondent used the disputed domain name to market and/or to sell products bearing the trademarks of Respondent. This finding is based on the Complainant’s letter to Respondent’s lawyer, dated June 7, 2004, where Complainant stated that Respondent has presented on the website “www.robercolor.com” not only Complainant’s products, but also Respondent’s own goods bearing the trademark EMKO EMAYE.

The Panel finds that Respondent, by registering and using the disputed domain name, has intentionally attempted to profit from the Complainant’s ROBERCOLOR marks when marketing and/or selling products with the Respondent’s own trademarks.

Given the nature of the domain name, the absence of any bona fide use of it since it’s registration, and the previous business relationship between the parties, the Panel concludes that the domain name was registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <robercolor.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: August 15, 2005